Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            87553467

DATE:                                03/30/2018

NAME:                               khardley

NOTE:         

Searched:                                                             
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     Lexis/Nexis                       
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     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
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     Surname                          
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     ID with ID/CLASS mailbox

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Discussed file with
Attorney/Applicant via:
    X   phone                               Left message with
    X   email                               Attorney/Applicant

 X   Requested Law Library search           Issued Examiner’s Amendment
     for: Common source and trade channels  and entered changes in TRADEUPS

        PRINT        DO NOT PRINT           Added design code in TRADEUPS
     Description of the mark
     Translation statement                  Re-imaged standard character
                                            drawing
     Negative translation statement             
     Consent of living individual           Contacted TM MADRID ID/CLASS
                                            about misclassified definite ID
     Changed TRADEUPS to:

 X   OTHER:

Hi Examiner Hardley,

 

We accept your amendment below to include “consisting of” in class 9 and amendments for classes 35 and 42.

 

Thank you for working with us to get CHOMP registered!

 

Kinyoshi

 

 

......................................................................................................................................................
This message contains information which may be legally Confidential and Privileged. This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 USC 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. Unless you are the addressee (or authorized receive for the addressee), you may not use, copy, or disclose to anyone the message or any information contained in the message. If you have received this message in error, please advise the sender by reply e-mail to Info@IPInvestLaw.com and delete the message. Thank you very much.

 

 

 

From: Hardley, Keisha [mailto:Keisha.Hardley@USPTO.GOV]
Sent: Friday, March 30, 2018 02:20
To: Kinyoshi Tokuyama
Cc: patsupport@ipinvestlaw.com
Subject: RE: RADEMARK APPLICATION NO. 87553467 - CHOMP - 53-T002

 

Greetings,

 

In regards to the highlights below, they are acceptable with the exception of the changes made in red. “Including” is considered indefinite language and is not permitted generally. As a result, I have suggested “consisting of.”

 

International Class 009:        “Downloadable computer software in the field of social networking for the collecting, in the nature of namely, taking displaying and capturing digital images consisting of photographs and videos; Downloadable computer software in the field of social networking for editing in the nature of editing user profiles commenting and posting comments to the digital images captured and displayed; Downloadable computer software in the field of social networking for organizing in the nature of organizing digital images consisting of photographs and videos managing; Downloadable computer software in the field of social networking for modifying data and information for social networking purposes in the nature of accessing, arranging, combining, manipulating, and operating; Downloadable computer software in the field of a social networking for book marking in the nature of tagging and linking to user profiles, images and data; Downloadable computer software in the field of social networking for transmitting data and images in the nature of processing, uploading, downloading, and streaming via the internet, communication networks, mobile phones, and mobile devices within the user’s social network from a user to another user; Downloadable computer software in the field of social networking for storing and sharing in the nature of displaying, distributing, providing, and viewing of data and information in the nature of photos, videos, images, text, electronic media, photographic and video content, digital data, and data content; none of the foregoing utilized within the food ordering and delivering services industry”

 

 

If you are fine with this change in class 009 and the previous changes discussed with the other classes I can enter them via examiner’s amendment. Simply respond to this email indicating your acceptance.

 

 

Keisha M. Hardley
Trademark Examining Attorney

Law Office 112
United States Patent and Trademark Office
P: (571) 272-6945

F: (571) 273-6945

keisha.hardley@uspto.gov

 

 

 

 

 

From: Kinyoshi Tokuyama [mailto:kinyoshit@ipinvestlaw.com]
Sent: Wednesday, March 28, 2018 6:44 PM
To: Hardley, Keisha <Keisha.Hardley@USPTO.GOV>
Cc: patsupport@ipinvestlaw.com
Subject: RE: RADEMARK APPLICATION NO. 87553467 - CHOMP - 53-T002

 

Hi Examiner Hardley,

 

Thank you very much for accepting our proposal!  Our client will be thrilled with the great outcome!

 

As for class 9 amendments, please see if some of the minor edits highlighted in yellow are acceptable.

 

International Class 009:        “Downloadable computer software in the field of social networking for the collecting, in the nature of namely, taking displaying and capturing digital images including photographs and videos; Downloadable computer software in the field of social networking for editing in the nature of editing user profiles commenting and posting comments to the digital images captured and displayed; Downloadable computer software in the field of social networking for organizing in the nature of organizing digital images including photographs and videos managing; Downloadable computer software in the field of social networking for modifying data and information for social networking purposes in the nature of accessing, arranging, combining, manipulating, and operating; Downloadable computer software in the field of a social networking for book marking in the nature of tagging and linking to user profiles, images and data; Downloadable computer software in the field of social networking for transmitting data and images in the nature of processing, uploading, downloading, and streaming via the internet, communication networks, mobile phones, and mobile devices within the user’s social network from a user to another user; Downloadable computer software in the field of social networking for storing and sharing in the nature of displaying, distributing, providing, and viewing of data and information in the nature of photos, videos, images, text, electronic media, photographic and video content, digital data, and data content; none of the foregoing utilized within the food ordering and delivering services industry”

 

Please let us know if the above amendments can be acceptable.

 

Thank you.

 

Kinyoshi

 

 

......................................................................................................................................................
This message contains information which may be legally Confidential and Privileged. This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 USC 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. Unless you are the addressee (or authorized receive for the addressee), you may not use, copy, or disclose to anyone the message or any information contained in the message. If you have received this message in error, please advise the sender by reply e-mail to Info@IPInvestLaw.com and delete the message. Thank you very much.

 

 

 

From: Hardley, Keisha [mailto:Keisha.Hardley@USPTO.GOV]
Sent: Thursday, March 29, 2018 05:17
To: Kinyoshi Tokuyama
Cc: patsupport@ipinvestlaw.com
Subject: RE: RADEMARK APPLICATION NO. 87553467 - CHOMP - 53-T002

 

Greetings,

 

Thank you for your follow-up email regarding this matter. I am willing to accept your proposed limiting language. The final language would read as noted below for each class. Please also note there is bracketed language within Class 009 that would need your proposed language suggestion before entering an examiner’s amendment. If you would like the language to read “capturing images,” simply indicate such and I will enter that as well. I look forward to your response.  

 

 

International Class 009:        “Downloadable computer software in the field of social networking for the collecting, in the nature of namely, taking displaying and capturing [specify what is displayed and captured, e.g., images]; Downloadable computer software in the field of social networking for editing in the nature of editing user profiles commenting and posting; Downloadable computer software in the field of social networking for organizing in the nature of organizing digital images and photographs managing; Downloadable computer software in the field of social networking for modifying data and information for social networking purposes in the nature of accessing, arranging, combining, manipulating, and operating; Downloadable computer software in the field of a social networking for book marking in the nature of tagging and linking to user profiles, images and data; Downloadable computer software in the field of social networking for transmitting data and images in the nature of processing, uploading, downloading, and streaming via the internet, communication networks, mobile phones, and mobile devices within the user’s social network from a user to another user; Downloadable computer software in the field of social networking for storing and sharing in the nature of displaying, distributing, providing, and viewing of data and information in the nature of photos, videos, images, text, electronic media, photographic and video content, digital data, and data content; none of the foregoing utilized within the food ordering and delivering services industry”

 

International Class 035:        “Online advertising within the field of social networking via a computer communications network; none of the foregoing utilized within the food ordering and delivering services industry”

 

International Class 038:        “Computer aided transmission of information and images”

 

International Class 042:        “Software as a service (SAAS) services in the field of social networking featuring software for user to publish and share own content and image in the nature of digital content; none of the foregoing utilized within the food ordering and delivering services industry”

 

 

Regards,

 

 

Keisha M. Hardley
Trademark Examining Attorney

Law Office 112
United States Patent and Trademark Office
P: (571) 272-6945

F: (571) 273-6945

keisha.hardley@uspto.gov

 

 

 

 

 

From: Kinyoshi Tokuyama [mailto:kinyoshit@ipinvestlaw.com]
Sent: Wednesday, March 28, 2018 1:22 AM
To: Hardley, Keisha <Keisha.Hardley@USPTO.GOV>
Cc: patsupport@ipinvestlaw.com
Subject: RE: RADEMARK APPLICATION NO. 87553467 - CHOMP - 53-T002

 

Hi Examiner Hardley,

 

We spoke to the client and was wondering if the following limitation will help our client for allowance.

 

For example, please see the amendment in underlining as exemplified in class 42.

 

International Class 042:        “Software as a service (SAAS) services in the field of social networking featuring software for user to publish and share own content and image in the nature of digital content; none of the foregoing utilized within the food ordering and delivering services industry”

 

We believe CHOMPD is specific to ordering and delivering of items from the restaurant menu as shown below.

 

Class 9

“downloadable software in the nature of mobile applications, namely, software for use in facilitating the advertising and marketing of restaurants to consumers, for accessing restaurant menus, for placing restaurant orders, for monitoring the status and/or location of restaurant orders, for assisting restaurant delivery operators with mapping, planning, and tracking their orders, trips, and finances” [underlining for clarity]

 

We understand that Final Office Action may have been issued.  But we would appreciate your consideration to amend the description to continue prosecution.

 

Thank you.

 

Kinyoshi

 

 

......................................................................................................................................................
This message contains information which may be legally Confidential and Privileged. This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 USC 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. Unless you are the addressee (or authorized receive for the addressee), you may not use, copy, or disclose to anyone the message or any information contained in the message. If you have received this message in error, please advise the sender by reply e-mail to Info@IPInvestLaw.com and delete the message. Thank you very much.

 

 

 

 

From: Kinyoshi Tokuyama [mailto:kinyoshit@ipinvestlaw.com]
Sent: Friday, March 23, 2018 06:59
To: 'Hardley, Keisha'
Cc: patsupport@ipinvestlaw.com
Subject: RE: RADEMARK APPLICATION NO. 87553467 - CHOMP - 53-T002

 

Hi Examiner Hardley,

 

Thank you for your email and the proposal.

 

Unfortunately, the proposal of including “…none of the foregoing utilized within the food services industry” will be unacceptable by our client.

 

We believe the CHOMPD service is Business to Consumer where no service is provided between Consumer and Consumer within their own social network.  Further, while CHOMPD is about ordering food for restaurant, it is nothing related to sharing user captured information including photos and videos within the user’s social network.

 

We are unclear as how that will cause a likelihood of confusion.  Also, in the alternative, besides class 38, we would like to know if some of the classes can be allowed if not all.

 

I would appreciate your time again to discuss over the phone.  Since I am still in Japan, I would appreciate your time around 9am EST sometime next week. 

 

I am also available for discussion right now if you are available.

 

Thank you.

 

Kinyoshi

 

 

......................................................................................................................................................
This message contains information which may be legally Confidential and Privileged. This communication constitutes an electronic communication within the meaning of the Electronic Communications Privacy Act, 18 USC 2510, and its disclosure is strictly limited to the recipient intended by the sender of this message. Unless you are the addressee (or authorized receive for the addressee), you may not use, copy, or disclose to anyone the message or any information contained in the message. If you have received this message in error, please advise the sender by reply e-mail to Info@IPInvestLaw.com and delete the message. Thank you very much.

 

 

 

From: Hardley, Keisha [mailto:Keisha.Hardley@USPTO.GOV]
Sent: Thursday, March 22, 2018 23:50
To: kinyoshit@ipinvestlaw.com
Cc: efs@ipinvestlaw.com
Subject: RADEMARK APPLICATION NO. 87553467 - CHOMP - 53-T002

 

Attorney Tokuyama,

 

I have reviewed your Office action response. There are still issues with the identification that will result in a Final Office action being issued if the identification of goods and services remain unchanged as you have submitted. As a result, I have proposed amendments to the identification of goods and services that will be acceptable and obviate the Section 2(d) Refusal. If you would like to accept the amendments I have proposed below simply respond to this email indicating your acceptance and an examiner’s amendment can be issued. This will allow the application to proceed towards registration. If you do not accept the proposed amendments below a Final Office action will be issued. Please respond by Monday March 26, 2018. If a response is not received a Final Office action will be issued.

 

International Class 009:        “Downloadable computer software in the field of social networking for the collecting, in the nature of namely, taking displaying and capturing [specify what is displayed and captured, e.g., images]; Downloadable computer software in the field of social networking for editing in the nature of editing user profiles commenting and posting; Downloadable computer software in the field of social networking for organizing in the nature of organizing digital images and photographs managing; Downloadable computer software in the field of social networking for modifying data and information for social networking purposes in the nature of accessing, arranging, combining, manipulating, and operating; Downloadable computer software in the field of a social networking for book marking in the nature of tagging and linking to user profiles, images and data; Downloadable computer software in the field of social networking for transmitting data and images in the nature of processing, uploading, downloading, and streaming via the internet, communication networks, mobile phones, and mobile devices within the user’s social network from a user to another user; Downloadable computer software in the field of social networking for storing and sharing in the nature of displaying, distributing, providing, and viewing of data and information in the nature of photos, videos, images, text, electronic media, photographic and video content, digital data, and data content; none of the foregoing utilized within the food services industry”

 

International Class 035:        “Online advertising within the field of social networking via a computer communications network; none of the foregoing utilized within the food services industry”

 

International Class 038:        “Computer aided transmission of information and images”

 

International Class 042:        “Software as a service (SAAS) services in the field of social networking featuring software for user to publish and share own content and image in the nature of digital content; none of the foregoing utilized within the food services industry”

 

 

Regards,

 

 

Keisha M. Hardley
Trademark Examining Attorney

Law Office 112
United States Patent and Trademark Office
P: (571) 272-6945

F: (571) 273-6945

keisha.hardley@uspto.gov